ACTION brought against the decision of the Second Board of Appeal of EUIPO of 30 April 2015 (Case R 1917/2014-2), concerning an application for registration of a three-dimensional sign consisting of the shape of a toothbrush as an EU trade mark,

having regard to the application lodged at the Court Registry on 15 July 2015,

having regard to the response lodged at the Court Registry on 22 October 2015,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

1 On 15 November, the applicant, Loops, LLC, filed an application for an international registration designating the European Union for the following three-dimensional mark:

2 The goods in respect of which registration was sought are in Class 21 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘toothbrushes’.

3 On 13 January 2014, the examiner issued a provisional refusal of registration, on the ground that the mark applied for was devoid of distinctive character for the purposes of Article 7(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1). He stated that that mark merely represented the shape of a typical toothbrush and that it also served a functional purpose, as it ensured better handling and flexibility.

4 On 13 March 2014, the applicant disputed that provisional refusal, on the ground that the public, on seeing a ‘barbell’ shaped toothbrush, would distinguish it from other products on the market, precisely because of its unique characteristics. It therefore claimed that the mark applied for had a sufficiently distinctive character to be registered and stated that a mark could take the shape of goods, as long as they were capable of having a distinctive function.

5 By decision of 26 May 2014, the examiner refused protection of the mark applied for in the European Union, in accordance with Article 7(1)(b) of Regulation No 207/2009. In particular, he considered that the ‘barbell’ shape was merely decorative and was a mere variation on a common theme used on many toothbrush handles, which have ‘bumps’ which serve, in particular, to improve the grip.

6 On 20 July 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.

7 By decision of 30 April 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. It held, in paragraph 18 of the contested decision, that the relevant public for toothbrushes was the average consumer. It held, furthermore, in paragraph 23 of the contested decision, that the very fact that the mark was immediately recognised as a toothbrush, without any further research or prolonged reflection, suggested at the very least that it did not depart significantly from the shape which consumers expect a toothbrush to possess. In the present case, the Board of Appeal held that the mark consisted of a ‘head’, where the brush is located, connected to a ‘shaft’ terminating in a ‘handle portion’ which the user held to manipulate the toothbrush, characteristics which enable that mark to be recognised as a toothbrush. The Board of Appeal added, in paragraph 25 of the contested decision, that an average adult consumer recognised a toothbrush by the fact that it generally consisted of a brush-head, a neck and a handle-part and that the mark applied for did not appear to differ significantly from those characteristics. The Board of Appeal stated, in paragraph 26 of the contested decision, that as could be seen from the examples submitted by the applicant, the differences between the toothbrushes on the market reflected, inter alia, largely decorative or practical considerations. It therefore concluded that the examiner did not commit an error in considering that the mark applied for did not depart significantly from the customs of the sector of the goods in question.

10 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.

11 According to the applicant, even if the mark can be recognised as a toothbrush per se by the trade circles concerned, that is not a reason to refuse to recognise its distinctive character. The applicant adds that the conclusion that the mark applied for does not depart significantly from the norm of the sector is arbitrary and contrary to case-law. The applicant states that the unique appearance of the mark taken as a whole is that of a cross between a brush and a teaspoon, having regard to the fact, first, that the handle of the toothbrush is significantly broader than its head, and, second, that the shape of the handle is comparable to that of a teaspoon, which distinguishes it from the standard or norm toothbrushes available in the internal market.

12 Under Article 7(1)(b) of Regulation No 207/2009, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

13 For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009, it must serve to identify the goods in respect of which registration has been applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (judgments of 29 April 2004 in Henkel v OHIM, C‑456/01 P and C‑457/01 P, ECR, EU:C:2004:258, paragraph 34; 20 October 2011 in Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 42; 15 May 2014 in Louis Vuitton Malletier v OHIM, C‑97/12 P, not published, EU:C:2014:324, paragraph 50; and 18 January 2013 in FunFactory v OHIM (Vibrator), T‑137/12, not published, EU:T:2013:26, paragraph 15).

14 In that regard, it is useful to recall that the signs devoid of any distinctive character referred to in Article 7(1)(b) of Regulation No 207/2009 are signs which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition. Such is the case for inter alia signs which are commonly used in connection with the marketing of the goods or services concerned (see judgment of 24 November 2015 in Intervog v OHIM (meet me), T‑190/15, not published, EU:T:2015:874, paragraph 15 and the case-law cited).

15 That distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public, which consists of average consumers of the goods or services in question, who are reasonably well informed and reasonably observant and circumspect (judgments of 29 April 2004 in Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35; 22 June 2006 in Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 25; 20 October 2011 in Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 43; and 18 January 2013 in Vibrator, T‑137/12, not published, EU:T:2013:26, paragraph 16).

16 According to equally established case-law, the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the goods themselves are no different from those applicable to other categories of trade mark (judgments of 22 June 2006 in Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 26; 20 October 2011 in Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 43; and 10 October 2007 in Bang & Olufsen v OHIM (Shape of a loudspeaker), T‑460/05, EU:T:2007:304, paragraph 36).

17 However, when those criteria are applied, account must be taken of the fact that the perception of the relevant public is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the goods themselves as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the goods it designates. Average consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark (judgments of 22 June 2006 in Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 27; 20 October 2011 in Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 46; and 10 October 2007 in Shape of a loudspeaker, T‑460/05, EU:T:2007:304, paragraph 37).

18 Furthermore, in accordance with the case-law, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the goods in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 (judgments of 29 April 2004 in Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 39; 7 May 2015 in Voss of Norway v OHIM, C‑445/13 P, EU:C:2015:303, paragraph 91; 10 September 2008 in Gerson v OHIM (Paint filter partly coloured yellow), T‑201/06, not published, EU:T:2008:332, paragraph 22; and 14 September 2009 in Lange Uhren v OHIM (Geometric shapes on a watch face), T‑152/07, not published, EU:T:2009:324, paragraph 69).

19 It follows that, where a three-dimensional mark is constituted by the shape of the goods for which registration is sought, the mere fact that that shape is a ‘variant’ of a common shape of that type of goods is not sufficient to establish that the mark is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. It must always be determined whether such a mark permits the average consumer of that product, who is reasonably well informed and reasonably observant and circumspect, to distinguish the goods concerned from those of other undertakings without conducting an analytical examination and without paying particular attention (see judgment of 7 May 2015 in Voss of Norway v OHIM, C‑445/13 P, EU:C:2015:303, paragraph 92 and the case-law cited).

20 In the present case, the Board of Appeal found, in paragraph 18 of the contested decision, that, to the extent that the goods in question were everyday consumer products, it was necessary to assess the distinctive character of the mark applied for by taking into account the presumed expectation of the average consumer, who is reasonably well informed and reasonably observant and circumspect. That finding, which, moreover, has not been challenged by the applicant, must be confirmed.

21 The applicant claims that the mark applied for is distinguished from representations of everyday toothbrushes, on the ground that the latter are in the form of a head having, in essence, the same width as the handle and with a thin and elongated appearance as an overall impression, whereas the mark applied for is presented as a type of cross between a brush and a teaspoon.

22 In that regard, it must be held that the trade mark consists, as was rightly pointed out the Board of Appeal in paragraph 23 of the contested decision, of a ‘head’, where the brush is located, connected to a ‘shaft’ terminating in a ‘handle portion’ which the user holds to manipulate the toothbrush.

23 It follows from that description that the mark applied for is in the form of a toothbrush and not, as the applicant claims, a cross between a brush and a teaspoon, notwithstanding the fact that the head is substantially narrower than the handle. Such a characteristic is neither unique nor significant, since it is apparent from the Internet research carried out by the applicant itself on a search engine, and reproduced in the application, that a toothbrush model has a handle whose width just after the ‘shaft’ is significantly greater than that of the head.

24 Toothbrushes are generally, as was rightly stated the Board of Appeal in paragraph 25 of the contested decision, in the form of a handle at the end of which is a head in which bristles are fixed for cleaning teeth, the thickness of the head as well as part of the handle is also dependent on the characteristics inherent in the function of that toothbrush, which must be put into the mouth.

25 On this point, it is clear that the greater or lesser width of the handle meets the need to ensure the stability of the toothbrush during its use, so that that characteristic may appear to be inherent in the very function of the product concerned.

26 Furthermore, the fact that the mark applied for has bumps on the upper surface and a slightly sloping shaft which is thinner than the head does not in any way change the conclusion that that mark will be directly and immediately perceived by the consumer as a toothbrush.

27 As EUIPO correctly stated, the bumps also reflect a functional characteristic, namely to allow a better grip of the toothbrush, in particular by children.

28 It must therefore be found that, overall, the mark for which registration is sought is in the form of a toothbrush, the abovementioned characteristics of which are similar to variations of toothbrushes usually available on the market, which do not permit the finding that that mark, as a whole, diverges significantly from the usual forms of those goods.

29 The Board of Appeal was therefore right to consider that the mark applied for was only a ‘variant’ of one of the usual shapes of a toothbrush, so that it cannot benefit from registration under Regulation No 207/2009.

30 It follows from the foregoing that the Board of Appeal did not err in finding that the average consumer in the European Union would perceive the mark applied for, as a whole, merely as a variant of the shape of the goods for which registration was sought.

31 That conclusion cannot be weakened by the applicant’s argument that EUIPO has registered other three-dimensional signs which may be recognised by the shape of the goods in relation to which registration was sought.

32 In that regard, it must be borne in mind that, in the light of the principles of equal treatment and of sound administration, it has indeed been held that EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 74).

33 However, those principles must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (see, to that effect, judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 and 76).

34 Moreover, for reasons of legal certainty and sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 77).

35 Finally, it must be pointed out that, in accordance with settled case-law, decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the registrability of a sign as an EU trade mark must be assessed only on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of previous decision-making practice of the Boards of Appeal (judgments of 15 September 2005 in BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47; 9 October 2002 in Glaverbel v OHIM (Surface of a plate of glass), T‑36/01, EU:T:2002:245, paragraph 35; and 12 June 2007 in Sherwin-Williams v OHIM (TWIST & POUR), T‑190/05, EU:T:2007:171, paragraph 38).

36 In the present case, it is apparent from the contested decision that the Board of Appeal performed a full and specific examination of the trade mark applied for before refusing to register it. In addition, it is apparent from the examination of the applicant’s other claims that that examination led the Board of Appeal to find, correctly, that the absolute ground for refusal to register referred to in Article 7(1)(b) of Regulation No 207/2009 existed and thus precluded registration of the trade mark applied for. Since the examination of the trade mark at issue in the light of that provision could not, in itself, lead to a different conclusion, the applicant’s claims of a failure to take into consideration the registration of other marks cannot succeed. The applicant may thus not rely on previous EUIPO decisions in order to cast doubt on the conclusion that the registration of the mark applied for is incompatible with Regulation No 207/2009.

37 It follows from all of the foregoing that the sole plea in law must be rejected as well as the action in its entirety, without it being necessary to rule on the admissibility of the applicant’s claims for registration of the mark applied for (see, to that effect, judgment of 13 January 2014 in LaserSoft Imaging v OHIM (WorkflowPilot), T‑475/12, not published, EU:T:2014:2, paragraph 35 and the case-law cited).

Costs

38 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.